Evaluating Trans-Border Reputation and Bad Faith Adoption in Indian Trademark Law
Introduction:This case pertains to a dispute over trademark rights between an internationally reputed digital advertising company and an Indian entity claiming local registration. It addresses critical issues of prior use, trans-border reputation, deceptive similarity, and bad faith adoption in the context of rectification petitions filed under the Trade Marks Act, 1999. The adjudication undertaken by the Hon’ble High Court of Madras serves as a significant pronouncement in trademark law jurisprudence, especially in evaluating conflicting claims of domestic registration and international goodwill.
Factual Background:The petitioner, Media Monks Multimedia Holding B.V., a digital media and advertising company founded in 2001 and based in the Netherlands, has been using the trademark “MEDIAMONKS” globally as a domain name, trade name, and service identifier. The company claimed to have a presence in India since 2015 and presented evidence of global registrations, including those under the Madrid Protocol. The petitioner alleged that its mark was inherently distinctive and had acquired a trans-border reputation owing to extensive use and international recognition.
The first respondent, Pachala Murali Krishna, registered the marks “MEDIA MONK” and “MEDIA MONK LABEL” in India in 2009 under Classes 09, 16, and 35. The respondent asserted that the term “Media Monk” was derived from his personal moniker and was honestly adopted for his advertising business. The petitioner contended that these registrations were deceptive, confusingly similar, and made in bad faith, warranting rectification under Sections 47, 57, and 125 of the Trade Marks Act, 1999.
Procedural Background:The petitioner initiated six rectification petitions under various trademark classes, seeking cancellation of the respondent’s registrations. The matter proceeded before the High Court of Madras after issues were framed by the Court on 08 December 2023. The parties led evidence through affidavits, cross-examinations, and documentary records, with both oral and documentary evidence forming a substantial part of the trial. After hearing counsels and evaluating pleadings, the Court reserved judgment on 21 April 2025 and pronounced its decision on 26 June 2025.
Legal Issue:The primary legal issues involved were whether the petitioner was the prior adopter and user of the mark “MEDIAMONKS” globally and in India, whether the marks registered by the respondent were deceptively similar, whether they were adopted in bad faith, and whether the petitioner had acquiesced in the respondent’s use of the marks, thereby barring rectification?.
Discussion on Judgments:The petitioner relied heavily on Milmet Oftho Industries and Ors. v. Allergan Inc., (2004) 12 SCC 624, where the Supreme Court held that the first user of a trademark in the world market may be entitled to protection even if not first used in India. This supported the petitioner’s case that global goodwill deserves legal recognition in India.
In Hardie Trading Ltd. and Another v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, the Supreme Court held that proposed-to-be-used applications could establish intention to use and that locus under Section 57 should be liberally interpreted to preserve the purity of the register.
The petitioner also cited Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, where the Court acknowledged that even domain names could acquire the status of trademarks if associated with business goodwill.
To substantiate the relevance of trans-border reputation, the petitioner placed reliance on multiple judgments including Laxmikant V. Patel v. Chetanbhat Shah, (2002) 24 PTC 1 (SC), Austin Nichols & Co. v. Arvind Behl, 2005 SCC OnLine Del 1276, and Rolex SA v. Alex Jewellary Pvt. Ltd., 2014 SCC OnLine Del 1619.
Conversely, the respondent cited Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, to argue that the territoriality principle limits the application of trans-border reputation unless there is concrete evidence of prior reputation in India.
Reasoning and Analysis of the Judge:The Court evaluated the petitioner’s international presence and recognition as evidenced by registrations, domain use since 2001, and participation in global projects. It noted that the mark “MEDIAMONKS” was coined and distinctive, comprising an unusual combination of generic English terms.
Upon comparing the marks, the Court found “MEDIA MONK” and “MEDIA MONK LABEL” deceptively similar to “MEDIAMONKS”, both phonetically and conceptually. The judge adopted the test of an average consumer with imperfect recollection and held that the essential features of the rival marks overlapped.
The Court also found that the first respondent had knowledge of the petitioner’s business and domain presence. Evidence from the respondent’s cross-examination showed familiarity with digital media platforms and awareness of global market players. The explanation given by the respondent—that he was called “Media Monk” by his peers—was deemed unconvincing and a post-rationalisation. The judge held that the adoption of the mark by the respondent was not bona fide but tainted with bad faith.
In addressing the argument of acquiescence under Section 33, the Court ruled that mere constructive notice through the trademark journal was insufficient to establish the petitioner’s knowledge. It also noted that the bad faith adoption excluded the application of Section 33 altogether. Delay alone, without acquiescence, could not defeat the rectification claim as per settled law.
Final Decision:The High Court allowed all six rectification petitions and directed the Registrar of Trademarks to cancel the entries relating to Trade Mark Nos. 1846455, 1846456, 1846457, 1846458, 1846459, and 1846460. The Court granted 60 days from the date of the order for compliance. No order as to costs was passed.
Law Settled in This Case:This judgment reaffirms the principle that prior global use of a trademark, accompanied by trans-border reputation and distinctive character, can justify rectification of later Indian registrations made in bad faith. It confirms that a composite test of similarity, business overlap, and consumer perception governs deceptive similarity. Further, the Court clarified that bad faith adoption nullifies defenses under Section 33 of the Trade Marks Act, and delay alone cannot bar rectification when public interest in maintaining register purity is at stake.
Case Title: M/s Media Monks Multimedia Holding B.V. v. M/s Pachala Murali Krishna and Another:Date of Order: 26 June 2025:Case Number: (T)OP(TM) Nos. 368 to 370, 460, 461 & 464 of 2023:Neutral Citation: 2025:MHC:1473:Name of Court: High Court of Judicature at Madras:Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
